Westmore · UDRP DecisionUsuraunicredit.com
The Panel ordered transfer of <usuraunicredit.com>. It found the domain confusingly similar to the Complainant's prior UNICREDIT trademark despite the addition of the Italian pejorative term “usura.” The Panel further held that the Respondent's use of the domain for criticism of the bank did not confer rights or legitimate interests and that the domain was registered and used in bad faith because the Respondent knew of the bank and used the site to make accusations likely to tarnish the Complainant and its trademark.
The timeline behind usuraunicredit.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
The decision illustrates an approach under which adding a pejorative term to a recognizable trademark does not defeat confusing similarity, and criticism-related use does not automatically establish rights or legitimate interests. The Panel treated the domain's specific accusation of immoral or illegal conduct, together with demonstrated knowledge of the bank, as supporting tarnishment and bad faith, while acknowledging the general importance of freedom of speech.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION UniCredit S.p.A. v. Roberto Cossu Case No. D2014-1800 1. The Parties The Complainant is UniCredit S.p.A. of Rome, Italy, represented by Carlo Piana, Italy. The Respondent is Roberto Cossu of Taranto, Italy. 2. The Domain Name and Registrar The Disputed Domain Name <usuraunicredit.com> is registered with eNom (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 16, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the ”Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2014. The Center appointed Andrea Mondini as the sole panelist in this matter on November 20, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Respondent registered the Disputed Domain Name <usuraunicredit.com> on July 15, 2014. The Complainant is a major bank group offering a wide range of banking and finance services. It owns International Registration no. 797844 for the trademark UNICREDIT (logo) designating numerous countries. This trademark was filed prior to registration of the Disputed Domain Name <usuraunicredit.com> on July 15, 2014. The Italian word “ usura ” contained in the Disputed Domain Name means the charging of an excessively high interest rate on loans. 5. Parties’ Contentions A. Complainant The Complainant contends: - that the Disputed Domain Name is identical or confusingly similar to trademarks in which the Complainant has rights; - that the Respondent has no rights or legitimate interests in the Disputed Domain Name; and - that the Respondent registered and is using the Disputed Domain Name in bad faith because the Disputed Domain Name resolves to a website stating that it “collects experiences of UniCredit’s customers harassed by usurious rates charged by the bank”. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to have the Disputed Domain Name transferred to it: (i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant has shown that it holds trademark rights in the trademark UNICREDIT (International Registration no. 797844). The Complainant has also shown that the registration of this trademark predates the registration of the Disputed Domain Name. The Disputed Domain Name incorporates the UNICREDIT trademark with the addition of the Italian word “ usura ” which means the charging of excessively high interest rates on loans. “ Usura ” implies an immoral or even illegal conduct and is thus a pejorative term. Generally, a domain name consisting of a trademark and a negative or pejorative term is considered confusingly similar to the complainant’s trademark for the purpose of satisfying the standing requirement under the first element of the UDRP. Previous UDRP Panels have recognized that inclusion of a subsidiary word to the dominant feature of a mark at issue typically does not serve to obviate confusion for purposes of the UDRP’s first element threshold requirement, and/or that there may be a particular risk of confusion among Internet users whose first language is not the language of the domain name (see e.g. , Société Air France v. Mark Allaye-Chan , WIPO Case No. D2009-0327 , <airfrance-suck.com>). The Panel thus finds that the Complainant established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark UNICREDIT. B. Rights or Legitimate Interests The Complainants must show that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in the Disputed Domain Name in accordance with paragraph 4(c) of the Policy by demonstrating that: (i) the Respondent has made preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services prior to the dispute; (ii) the Respondent is commonly known by the Disputed Domain Name, even if no trademark or service mark rights have been acquired; or (iii) the Respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue. The Panel acknowledges that there exists no relationship between the Complainant and the Respondent that would give rise to any license, permission or authorization by which the Respondent could own or use the Disputed Domain Name. There is no evidence of any commercial relationship between the Complainant and the Respondent which would entitle the Respondent to make use of the Complainant’s mark. Furthermore, the Respondent is not commonly known by the Disputed Domain Name nor has the Disputed Domain Name been used in connection with a bona fide offering of goods or services prior to notice of the dispute. According to the Policy, the burden rests upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests in Disputed Domain Name but, once some evidence has been adduced by the Complainant in this regard, as in the present case, the onus is transferred to the Respondent to show otherwise. In the present case, however, Respondent has not filed a Response to rebut the Complainant’s prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It appears from the website posted by the Respondent that the Disputed Domain Name was previously used to collect criticism from Complainant’s customers who feel “harassed by usurious rates charged by the bank”. The Disputed Domain Name now redirects to a Facebook page that has been created for the aforementioned purpose. Previous panels have held that, “while one must concede that criticism per se is not a commercial use and that a criticism site may well be entirely legitimate, an argument can be made that a non-controlled use can be anti-commercial when it has the effect of driving regular customers away from one’s business. Having said that, the Panel also noted that the Respondents have used domain names that are identical and substantially similar to Complainants’ trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants’ trademarks. Respondents’ can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants’ marks. Given the free nature of the media which is the Internet and the chaotic spamming that has become epidemic, it does not appear that one can be at full liberty to use someone else’s trade name or trademark by simply claiming the right to exercise a right to freedom of expression.” (See The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez, WIPO Case No. D2002-0823 ; see also Bakers Delight Holdings Ltd v. Andrew Austin , WIPO Case No. D2008-0006 ). In the Panel’s view, it is not necessary, in order to fully exercise free speech rights, to use someone else’s trademark in a domain name. The same reasoning was followed inter alia in Westminster Savings Credit Union v. Hart Industries Inc. And Gregory Hart , WIPO Case No. D2002-0637 ; and in Bett Homes Limited and Bett Brothers PLC v. Bill McFadyen , WIPO Case No. D2001-1018 ; in which the panel stated; “For these reasons, whilst the Panel accepts that the Respondent may be free publicly to comment on the Complainant’s workmanship on the Internet, the Panel does not consider that such freedom confers a right or legitimate interest in the use of a domain name which is identical to the Complainant’s trade-mark.” In the Panel’s view, the same reasoning may be applied in cases where the disputed domain name also contains a pejorative word. The Panel notes that the Respondent’s web site to which the Disputed Domain Name resolves accuses the Complainant of harassing its customers by charging usurious interest rates. The allegation of “charging usurious rates” insinuates an immoral or even illegal activity and cannot, in the Pane’s opinion, give rise to rights or legitimate interests in the Disputed Domain Name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location. The Panel is not limited by the circumstances set out in paragraph 4(b) of the Policy to determine whether the Disputed Domain Name was registered and used in bad faith and the Panel can infer the proof of bad faith also from additional circumstances provided that the two requirements, i.e. , that the Disputed Domain Name was registered in bad faith and used in bad faith are proved. As to the first requisite, the Respondent was obviously aware of the existence of the Complainant’s trademarks at the time of registration of the Disputed Domain Name, in view of the content of the web site clearly referring to the bank. As to the use in bad faith, as previously noted, the Respondent’s web site to which the Disputed Domain Name resolves accuses the Complainant of harassing its customers by charging usurious interest rates. The content of the Respondent’s web site insinuates an immoral or even illegal activity. Such an accusation is therefore likely to tarnish the reputation of the Complainant and its trademark (see The Royal Bank of Scotland Group and National Westminster Bank v. Pedro Lopez and A&A System Solutions and Alberto Rodriguez , supra ). The Panel acknowledges the importance of freedom of speech and recognizes in some instances the legitimacy of a criticism site; however, the Panel is also convinced, as held in other comparable cases, that a respondent can continue expressing itself through the registration of a domain name other than those that may cause confusion or mislead the public. Accordingly, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <usuraunicredit.com> be transferred to the Complainant. Andrea Mondini Sole Panelist Date: November 25, 2014
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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